WIPO/GEO/MVD/01/9

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WIPO/GEO/MVD/01/9
ORIGINAL: English
DATE: November 15, 2001
NATIONAL DIRECTORATE FOR INDUSTRIAL PROPERTY,
MINISTRY OF INDUSTRY, ENERGY AND MINING OF URUGUAY / WORLD INTELLECTUAL
PROPERTY ORGANIZATION

symposium on the international protection
of geographical indications

organized by
the World Intellectual Property Organization (WIPO)

and
the National Directorate for Industrial Property (DNPI),
Ministry of Industry, Energy and Mining of Uruguay

Montevideo, November 28 and 29, 2001

The Way Ahead: Developing International Protection for Geographical Indications: Thinking Locally, Acting Globally[1]

document prepared by Mr. Anthony Taubman
Australian Center for Intellectual Property for Agriculture, Faculty of Law,
Australian National University, Canberra

“But if this is a battle of names, some of them asserting that they are like the truth, others contending that they are, how or by what criterion are we to decide between them? For there are no other names to which appeal can be made, but obviously recourse must be had to another standard which, without employing names, will make clear which of the two are right, and this must be a standard which shows the truth of things.” Plato, Cratylus, 438e.

“But if you say ‘How am I to know what he means, when I see nothing but the signs he gives’ then I say ‘How is he to know what he means, when he has nothing but the signs either? ’” Ludwig Wittgenstein, Philosophical Investigations.

“Nada se edifica sobre la piedra, todo sobre la arena, pero nuestro deber es edificar como si fuera piedra la arena.” Jorge Luis Borges.

GEOGRAPHICAL INDICATIONS AND THE NATURE OF LANGUAGE

The uncertain and variable role of language in yoking together the word and the thing, the signifier and the signified, and the search for an objective way of mapping that permanently unfixed relationship, are questions that have vexed the best minds in philosophy and linguistics since those disciplines have existed. From his pathbreaking lectures in Geneva, Ferdinand de Saussure’s fundamental insights into the contingent quality of language, and the arbitrary linkage between signifier and signified, sparked a new way of analysing social institutions. In analysing language, the context of language use became more important than any presumed innate meaning built into words or signs: “The idea or phonic substance that a sign contains is of less importance than the other signs that surround it; thus the value of a term may be modified without either its meaning or its sound being affected, solely because a neighbouring term has been modified.”[2]

A greater opennness about the functioning of language, thinking about the functions of words in relation to one another, stigmatised the ‘parish-pump positivism’ that strove to discover the rigid logical link between language and the objective world. The career of Ludwig Wittgenstein followed this trajectory neatly, from a rigorously positivist endeavour to find a logical correspondence between language and the physical world, to an acceptance that language is, in effect, what the user makes of it.

Equally, as etymology records, the linkage between the name and what it points to has evolved, along with the general evolution of language (the English word ‘rice’ has its roots in an Ancient Greek geographical indication, ορυζον (oruzon) or ορυζα (oruza) meaning “of Eastern origin”, but is of course a generic term), and different linguistic communities interpret signs in different ways (‘Orange’ on a wine bottle is likely to convey a different message to a resident of Provence than to a resident of Orange County). Indeed, as a reaction to global connectedness, communities may increasingly look to linguistic differences to define themselves in conscious contrast to one another.

These few truisms remind us why the debate about geographical indications (GIs) has proven to be intractable, ill-defined, and at times passionate. Questions that have vexed philosophers since the dawn of their discipline are brought to a head in the debate. The debate potentially touches on the role of language in helping to define distinctive communities.

SUBJECTIVE JUDGEMENTS IN INTELLECTUAL PROPERTY LAW

These issues arise in other areas of intellectual property law, of course, and find practical if imperfect solutions: how to make a judgement, for instance, about whether a trade mark is distinctive, or whether there is a likelihood of confusion resulting from the use of a mark, or whether an article appears substantially to copy a registered design. This entails an endeavour to make an objective judgement about what would subjectively take place in other minds. This often comes down to individual judges, reporting on their own perceptions as to the likelihood of confusion between trade marks or as to the distinctiveness of a trade mark, this judgement serving in place of a collective determination as to how the relevant linguistic community would perceive the matter. Similarly, the lack of firm objective basis about similarity of designs has been acknowledged: “I cannot say that the present case is any exception to the rule that the eye, like the heart according to Pascal, has its reasons that reason does not know.”[3]

In assessing the legal status of trade marks, judges may, in effect, need to set aside a singular, positivist view of language and accept that the signification of words may be more diverse than conveying objective meaning; that language has a diversity of functions. So Dixon CJ observed in a leading trade mark case:

“The fallacy of asking what is the meaning of the phrase lies in the basal assumption that the words are intended to convey some definite meaning and perhaps the further assumption that the meaning has reference to the garments or the cottons. The assumption is fallacious because it overlooks the fact that language is not always used to convey an idea. Many uses of words are purely emotive. A word or words are often employed for no purpose but to evoke in the reader or hearer some feeling, some mood, some mental attitude. This is true of much advertising, which common experience shows to be full of meaningless but emotive expressions supposedly capable of inducing a generally favourable inclination in the almost subconscious thought of the passing auditor or hasty reader. Words put forward as trade marks are very likely indeed to be chosen in the same way.”[4]

ADDRESSING THE INTERNATIONAL DEBATE ON GEOGRAPHICAL INDICATIONS

These considerations should be borne in mind as well, when we discuss how to clarify and move forward the international debate on geographical indications. Much of the misunderstanding that bedevils the international discussions does actually hinge on these deeper questions. A symposium of this nature is an opportunity to explore the issues more deeply than is normally possible in international negotiations, and not merely report on the formal positions taken. We might acknowledge, in particular, that the debate about GIs is at core a debate about the function of language, about contrasting views about how language should be used, and about the ownership of language. It reflects the inevitable tension that arises between linguistic communities where both see a particular interest, whether it be cultural or commercial, in a particular use of language, and those interests diverge. This is acutely so because of the nature of the legal mechanisms that are proposed for the definition and protection of GIs, mechanisms which at the international level differ in key respects from other forms of intellectual property rights (IPRs):

(a)the trend towards international agreements that, in effect, pre-empt national decision-making about the IP status of particular terms: agreements at the international level concerning particular outcomes, in particular that a word’s status as a GI should prevail over other potential uses[5];

(b)the greater likelihood of the government administration making a preemptive judgement as to the status of a particular word, rather than determination based on assessment of its actual usage in the relevant linguistic community;

(c)the linkage together of these two trends, and their acceleration, through the introduction of GIs into trade negotiations, both trade negotiations at a bilateral level, and multilateral negotiations in the World Trade Organisation (WTO) concerning the implementation and further development of the Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS).

(d)This evolutionary pressure may lead over time to a change in the role of international IP rules: the traditional function of international agreements has been to provide for national treatment and minimum standards for the operation of processes within national legal systems to decide the status of individual IPRs; the role may lead towards establishing a quasi-universal determination of the status of a single, specific claim for IPR status with less scope for considering local factors and for the operation of national legal systems. Notwithstanding the similar potential of the Madrid trade mark system, the GI system seems to be leading in this trend, fuelled by the strong linkage between trade negotiations and the protection of geographical indications that has been so evident this month at Doha.

UNIVERSALITY OR DIVERSITY IN GIS: THE TRIPS DEBATES

This development is a challenge to linguistic diversity, and inherently curbs the capacity of certain words to mean different things to different people. This naturally comes to a head when the words are attached to goods which seek to find their way in truly global markets. In the past, the same term, despite its etymological roots in a geographical location, took on different significations in different communities, and these significations could change in both directions, as a discussion in 1919 showed:

“In an extensive survey made by the German Patentamt in 1914, concerning the name ‘Pilsner Beer,’ it was found that in ten countries (Australia, Canada, Chile, Denmark, Ecuador, Japan, Norway, Sweden, Spain and South Africa) it was considered as a designation of quality or kind of beer, while in fourteen others (Argentina, Austria, Belgium, China, Egypt, France, Great Britain, India, Italy, Mexico, the Netherlands, Switzerland, Turkey and the United States) it was considered exclusively or mainly as an indication of origin … It is curious to note that the name ‘Camembert’ for cheese was held [in 1926] to be a generic or descriptive term in France, where the community of Camembert is situated, and [in 1919] an indication of origin in Germany … [In the latter case, T]he Patentamt admitted that many foreign indications of origin have been applied to German cheese, and have become designations of the nature of the product. But by a change in public sentiment, these terms are again considered as indications of origin.”[6]

We should recognise that the trend is towards a universal GI, and away from this notion of responsiveness to a ‘change in public sentiment,’ which after all is a microcosm of linguistic evolution, the uncertainty between signifier and signified in the way language is actually used. This paper takes no position on whether this trend towards a universal determination is to be encouraged and welcomed or not; but the fact of this trend should be acknowledged if we are to chart a productive way forward in international debate. Equally, in the set-piece debates concerning overlapping trade mark and GI rights, the invocation of the principle of qui prior est tempore potior est jure (or ‘first in time, first in right’) may simply act to set aside the right of a linguistic community itself to determine the signification of a word, in that the ultimate question is not about choosing between competing exclusive rights, but whether there is sufficient policy basis for any exclusive rights to be bestowed at all on particular usages of a word. In recognition of this underlying interest, for instance, trade mark law provides for well established rules to determine when a trade mark has become generic and returns to the public domain, in effect, when a ‘change in public sentiment’ has decided it to be so.

A recent policy paper put to the TRIPS Council sets out the argument in favour of the universalist approach, as against a case-by-case approach taking into account the actual impression made by the use of the word in question:

“The requirement of the ‘misleading test’ in Article 22 of the TRIPS Agreement results in legal uncertainty as to the enforcement of protection for an individual geographical indication at the international level. It is up to the national courts and the national administrative authorities to decide whether or not the public is being misled by a particular use of a geographical indication, and to enforce their decision. However, whether or not the public is being misled and how the legal and administrative authorities apply and interpret this discretionary element of ‘misleading the public’ differs from country to country. The results are inconsistent decisions and legal uncertainty regarding the protection granted to geographical indications and its enforcement at the international level. Such legal uncertainty undermines and damages the good functioning of international trade in goods having the added value of a geographical indication.”[7]

The WTO’s debate on GIs takes place on the fault line between the principle of universal determination and the principle of accommodation of changes or diversity in public sentiment. This is apparent in the two general issues currently under consideration:

(a)The nature of the multilateral register of GIs to be established under Article23.4 of TRIPS, a ‘built-in’ negotiating mandate to which the Doha Ministerial has given a firm deadline: the key question here is the degree to which a country’s notification of a GI should trigger a presumption of protection, either substantively or procedurally, in all other WTO Members.

(b)The proposed extension of the so-called ‘higher’ protection of Article 23.1 to GIs associated with products other than wine and spirits: the key question here is whether the actual state of mind of the linguistic community concerned, the consumers of the product, and the actual function of the use of the term in question should be weighed in assessing the eligibility of a term for GI protection, or whether there should instead be objective GI rights in the term in any case, regardless of the information it conveys to consumers; the outcome of the Doha Ministerial on this point is somewhat attenuated, but has been interpreted, for instance, by the European Commission as ‘a mandate for negotiations on extension of GI coverage has been agreed for the benefit of products around the world.’[8]

(c)In a deep irony, these debates lose sight of the real obstacles to the universalist trend, as they leave aside the two key issues: firstly, the very application of the definition of ‘geographical indication’ and, secondly, the operation of the exceptions to GI protection that are provided for in Article 24 of TRIPS, the optional avenues TRIPS provides for the exercise of linguistic diversity. The elaborate and arcane debate that has built up about the TRIPS review agenda has taken for granted these more important issues.

On the first point, the debate can lose sight of the fundamental nature of the GI, its purpose being to indicate and its definition being based on whether it functions to indicate. TRIPS defines geographical indications as ‘indications which identify a good as originating in the territory of a Member, or a region or locality in that territory, where a given quality, reputation or other characteristic of the good is essentially attributable to its geographical origin.’ While this definition has an objective flavour to it, the fundamental question is whether a claimed GI is, a priori, an indication, and then whether it serves to identify a good as originating in a certain location. This is a judgement about the function of the term in itself, and in turn, about the way it is used by a linguistic community. So the word ‘suede’ fails to meet the definition of ‘geographical indication’ in the first place, notwithstanding its derivation from ‘(gants de) Suède’(or ‘Swedish gloves’), it is therefore unnecessary to apply any exception to GI protection to allow for its generic use, even if the ‘higher’ protection of TRIPS Article 23.1 were to apply to leathergoods.

Some countries, and linguistic communities within them, may perceive the same term in very different ways: for some, it does serve as an indication, identifying a good as originating from somewhere; for others, it might (in the words of Dixon CJ cited above) ‘evoke in the reader or hearer some feeling, some mood, some mental attitude;’[9] for others still, it might concretely describe a particular physical quality independent of geographical origin. Hence a word that qualifies as a GI in one social or legal context may not in other contexts. Any claim for GI protection hinges, naturally, first of all on whether the term does actually meet the definition of Article 22.1, does it indicate at all, and if so, does it identify a good as coming from some specific location? This will depend, to large extent, on whether a universalist or objective (even ‘positivist’) approach is taken to the application of this interpretation, or whether greater weight is given to the subjective, and the diverse functions of language.

On the second point, the actual operation of GI agreements shows that the more immediate and tangible trade benefits have flowed not from general agreements on the broad principles that should apply, but as a result of bilateral negotiations in which it is agreed in effect to suspend the balance of interests (between competing claims of geographical signification and generic use or other fair use), and ascribe enhanced protection to individual GIs regardless of their actual linguistic signification in the domestic marketplace (this process, familiar from bilateral negotiations on wine, for instance, comes much closer, in the writer’s view, to good faith implementation of Article 24.1 of TRIPS than the suggested interpretation that would have it as a mandate to broaden the scope of products included in Article 23.1 of TRIPS).